Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claims 1-20 are pending.
Priority
PNG
media_image1.png
162
842
media_image1.png
Greyscale
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 8/1/24, 7/14/25, 10/27/25, 3/16/26 and 5/22/26 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The abstract of the disclosure is objected to because it has “[150]” in the abstract. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12076338. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented method employs the instantly claimed medical device that is a substantially heterogenous composition as a solid mixture with the same amounts of stone, sand, metal, polymer, water and supporting material, in the same size and that comprises biophotons. The ordinary artisan would have recognized the obvious variation of the instantly claimed composition over the composition employed in the method of the patent.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18780609. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application employs the instantly claimed medical device that is a substantially heterogenous composition as a solid mixture with the same amounts of stone, sand, metal, polymer, water and supporting material, in the same size and that comprises biophotons. The ordinary artisan would have recognized the obvious variation of the instantly claimed composition over the composition employed in the method of the patent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16, 19 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 7, 28-35 of copending Application No. 17409665. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application teaches a bioenergy generator as measured by a biophoton detector comprising a mixture of bioactive solids comprising pieces of natural stone including amethyst, tourmaline or obsidian; natural sand; pieces of iron and copper, water (Claims 1-2), which are less than 2 mm diameter (Claims 4 and 29) with at least 4% by weight of the mixture of natural stone, natural sand and pieces of metal (Claim 7) and comprising a polymer or grout (Claim 28) that produces biophotons (Claim 32). It is the Examiner’s position that the natural sand implicitly comprises at least about 95% or at least about 98% silicon dioxide. The ordinary artisan would have recognized the obvious variation of the instantly claimed composition over the composition employed in the method of the patent. The copending does not expressly teach jade or diamond or a substantially heterogenous mixture or that the polymer is an isoprene rubber, a butyl rubber, a α-cellulose or a polysaccharide such as hyaluronic acid. However, mixing the components to produce a substantially heterogenous mixture is within the skill of the ordinary artisan as well as selecting a conventional polymer such as an isoprene rubber, a butyl rubber, a α-cellulose or a polysaccharide such as hyaluronic acid for use in the bioenergy generator of the copending application. Selection of other gemstones such as jade or diamond is obvious to the ordinary artisan in this art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-16, 19 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18374040. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application teaches methods of making a biophoton energized water comprising a bioenergy generator, that implicitly comprises biophotons as measured by a biophoton detector, that comprises pieces of natural stone including (a) pieces of a natural stone selected from the group consisting of: a diamond, an amethyst, a tourmaline, a jadestone, and an obsidian; (b) pieces of a natural sand selected from the group consisting of: a white sand, a black sand, a pink sand, a red sand, a yellow sand, an orange sand, and a green sand; ( c) pieces of a metal selected from the group consisting of: an iron, a copper, a zinc, an aluminum, a calcium, a magnesium, a silver, and a gold; or pieces of a steel; and ( d) a supporting material holding the: pieces of the natural stone, pieces of the natural sand, and pieces of the metal or pieces of the steel together as a mixture (Claim 1), which would be solid, that also comprises water (claim 8), where the stone, sand and metal are of equal weight (Claim 9) and a polymer, a grout or an adhesion material (Claim 10). The ordinary artisan would have recognized the obvious variation of the instantly claimed composition over the composition employed in the method of the patent. The copending does not expressly teach the size of the pieces of stone, sand and metal or the exact amounts of each component. However, selection of a size that fits within a container is within the skill of the ordinary artisan especially when the particle size of sand is naturally of the same magnitude as the range claimed. Optimizing the amount of each component to arrive at a composition having the same weight of stone, sand and metal of about 10% the stone, 10% the sand, 10% the metal, 50% the polymer, 10% the water, and 10% the supporting material is merely optimization of the copending components in the composition.
The copending does not expressly teach a substantially heterogenous mixture or polymer such as an isoprene rubber, a butyl rubber, a α-cellulose or a polysaccharide such as hyaluronic acid. However, mixing the components to produce a substantially heterogenous mixture is within the skill of the ordinary artisan as well as selecting a conventional polymer such as an isoprene rubber, a butyl rubber, a α-cellulose or a polysaccharide such as hyaluronic acid for use in the bioenergy generator of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNST V ARNOLD whose telephone number is (571)272-8509. The examiner can normally be reached M-F 7-3:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Y Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERNST V ARNOLD/Primary Examiner, Art Unit 1613
Prosecution Insights